DECISION
Somerset Soup Works, Inc. v. Ryan Wegmans
Claim Number: FA2501002136495
PARTIES
Complainant is Somerset Soup Works, Inc. ("Complainant"), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Ryan Wegmans ("Respondent"), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tabatchnick2.com>, registered with Namecheap, Inc.
PANEL
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 23, 2025. Forum received payment on January 23, 2025.
On January 23, 2025, Namecheap, Inc. confirmed by e-mail to Forum that the <tabatchnick2.com> domain name is registered with Namecheap, Inc. and that Respondent is the current registrant of the name. Namecheap, Inc. has verified that Respondent is bound by the Namecheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 28, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@tabatchnick2.com. Also on January 28, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On February 19, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant, Somerset Soup Works, Inc., is a nationally recognized soup company with over 30 varieties of hearty soups and broths. Complainant has been offering handcrafted soups made from the highest quality natural ingredients since 1905. Complainant owns the U.S. federally registered trademark TABATCHNICK for use in connection with soups and operates the website at "www.tabatchnick.com".
Respondent's <tabatchnick2.com> domain name is confusingly similar to Complainant's TABATCHNICK mark and its <tabatchnick.com> domain name.
Respondent has no rights or legitimate interests in the <tabatchnick2.com> domain name because Respondent is not a licensee of Complainant, nor is it authorized to use the TABATCHNICK mark or any marks confusingly similar thereto. Respondent is not commonly known by the domain name and is not using it in connection with any bona fide goods or services. Although the <tabatchnick2.com> domain name currently resolves to an inactive website, Respondent uses it to deceive actual clients of Complainant into paying fraudulent invoices or delivering equipment or products on fraudulent orders. Respondent fraudulently identifies itself as Tabatchnick Fine Foods (Complainant's trade name) on emails fraudulently claiming to be from a legitimate Tabatchnick Fine Foods' employee. Such use is neither a bona fide offering of goods or services nor a non-commercial or fair use.
There is no doubt that the <tabatchnick2.com> domain name is being used in bad faith. With respect to registration, the similarity between Respondent's domain name and the TABATCHNICK mark, and the scam to deceive actual clients of Complainant into paying fraudulent invoices and delivering equipment and products on fraudulent orders in connection with Complainant's trademark, are all evidence in support of the fact that Respondent registered the domain name with actual knowledge of Complainant's prior rights in the TABATCHNICK mark. Respondent displays Complainant's TABATCHNICK mark in emails sent from the <tabatchnick2.com> email addresses in order to create the impression that the emails are authorized by, endorsed by, or more specifically that Respondent is, in fact, Complainant. Such actions evidence bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the TABATCHNICK mark through registration with the USPTO (Reg. No. 1,720,497, registered on September 29, 1992 for soups in International Class 29).
The Panel finds Respondent's <tabatchnick2.com> domain name to be virtually identical and confusingly similar to Complainant's TABATCHNICK mark, differing only by an addition of the number "2", which does not distinguish the domain name from the mark. The ".com" generic top-level domain ("gTLD") may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <tabatchnick2.com> domain name was registered on September 22, 2024, many years after Complainant registered its TABATCHNICK mark with the USPTO. Complainant has shown that Respondent sent an email from <purchasing@tabatchnick2.com>, purporting to be from "[Name] Operations Manager Tabatchnick Fine Foods", seeking a quote for a "bulk purchase", saying:
"Kindly forward all necessary documents needed or [sic] the payment of the purchasing, our standard form of payment is by purchasing order [Net15 days] We wait for swift response."
The email also displayed Complainant's TABATCHNICK mark.
On October 21, 2024, Respondent sent another email from <purchasing@tabatchnick2.com> to a customer of Complainant, offering to deliver products, saying:
"we can only accept %100 advance payment for payment terms."
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <tabatchnick2.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA 1849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's TABATCHNICK mark when Respondent registered the <tabatchnick2.com> domain name and that Respondent registered and is using the domain name in bad faith for the purpose of impersonating Complainant and fraudulently phishing for money and goods.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tabatchnick2.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: February 20, 2025
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